On August 1, 2012, new instructions came into effect for the examination of trademarks and geographical indications (GIs) in Romania.

The Romanian Patent and Trademark Office issued the new instructions primarily to improve the efficiency of the examination procedure, but also to lower applicants’ expenses and to halt a decline in the number of national applications and renewals.

In light of the changes, all requests related to new trademark and GI applications or existing registrations must be processed immediately upon receipt. To that end, the Romanian PTO restructured its trademarks department by clearly defining the staff’s responsibilities and titles.

The trademark application form was changed; it now provides that the applicant declare that its application is filed in good faith.

Also, a new step has been introduced in the preliminary examination stage of trademark applications. Specifically, a search for any previous identical trademark applications or registrations for identical or similar goods and/or services has to be carried out among national applications and registrations, Community trademark applications and registrations, and International Registrations designating Romania and/or the European Union. The PTO then sends the search report to the applicant and a notice to the holder of any earlier trademark(s) cited in the search report.

The new instructions permit the Romanian PTO, on request, to extend the deadline for paying the examination fees. Such extensions are allowed only if they do not prolong the maximum legal term for the substantive examination of new applications (six months from publication for regular applications, three months from publication for urgent applications).

Thus, substantive examination begins only when the applicant pays the necessary fees. If the fees are not paid, the examiner will notify the applicant no later than 30 days before the examination term expires. If the applicant fails to pay the required fees before the deadline, the application will be refused.

If an applicant would like an expedited examination of its trademark, it must clearly indicate its request on the trademark application form and also pay the required fee. Belated requests and payments for expedited examination will not be accepted.

The new instructions also provide that during the substantive examination, in determining whether the trademark is capable of distinguishing the goods/services of one undertaking from those of another, examination will be made among identical and confusingly similar marks for identical goods/services in the same Nice class or similar goods/services in different Nice classes. This provision seems to indicate that earlier rights could or should be cited to refuse a trademark on the basis that it does not meet the general conditions for registration set forth in the law. However, the provision and its consequences are unclear. Clarifications from the Romanian PTO are expected shortly, and the implementation of this instruction has yet to take place.

Additionally, the instructions provide that if a trademark includes, is derived from or resembles a domain name that ends in a gTLD or ccTLD (such as .ro, .com or .gov), the ending will not be considered in the examination of the trademark. The ending will be deemed only to indicate the place where information can be found on the Internet, and thus it cannot render a descriptive or otherwise objectionable mark registrable.

The examination of trademarks consisting of geographical names (GNs) is now consistent with the practice of the Office for Harmonization in the Internal Market (OHIM). This means that the registration of trademarks that consist of GNs will not be prohibited when the public is unlikely to believe that the goods or services in question originated at the designated place.

When oppositions and/or observations are filed against the registration of a trademark application, they will be analyzed even if the examination fees for the opposed application are not paid. Wheb opposition is withdrawn before being analyzed and decided upon, the opposition fee may be refunded upon request; such situations are to be assessed on a case-by-case basis.

If multiple oppositions are filed, each will be analyzed and decided upon independently and in chronological order, to the fact that if one opposition is successful, the rest will become moot.

Finally, the Romanian PTO plans to take all necessary measures to enable a smoother and easier access to the Trademarks Register.

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